Intellectual Property Specialist
Position Summary
Vorys, Sater, Seymour and Pease LLP is searching for an experienced IP Specialist in our Houston, Texas, Columbus, Cincinnati, Akron, Cleveland, Ohio, Pittsburgh PA and DC office. The IP Specialist focuses on patent application lifecycle management, trademark prosecution and maintenance, and IP research and diligence. This role partners closely with attorneys, clients, and foreign associates to ensure accurate filings, timely responses, and consistent portfolio reporting across U.S. and international matters.
Essential Functions
- Prepare and coordinate filing materials for U.S., PCT, and design patent matters, including provisional and non-provisional applications, transmittal papers, declarations, assignments, powers of attorney, and preliminary amendments.
- Support patent prosecution by drafting and filing responses to USPTO communications, including missing parts responses, extension requests, petitions, notices of appeal, and information disclosure statements (IDS).
- Manage post-allowance tasks through issuance, including tracking deadlines, preparing and filing responses to notices of allowance, coordinating issue fee payments, reviewing issued patents, and drafting certificates of correction.
- Perform routine USPTO private database status checks and prepare domestic and foreign status reports for clients.
- Prepare and file U.S. trademark applications, prosecution responses, and post-registration maintenance filings.
- Draft and record trademark assignments, security interests, and title changes using the USPTO Electronic Trademark Assignment System (ETAS).
- Coordinate international trademark prosecution and maintenance through foreign counsel and via WIPO/Madrid Protocol.
- Support TTAB matters by assisting with filings such as notices of opposition, cancellation petitions, and related pleadings, and by collecting and organizing evidence of use.
- Conduct patent, trademark, and copyright record searches to identify chain-of-title issues, liens, or ownership defects in support of corporate transactions.
- Perform trademark screening/clearance searches, WHOIS domain lookups, and internet-based factual investigations.
- Monitor and analyze trademark watch notices, flagging potentially conflicting third-party applications for attorney review.
- Monitor the daily docket to ensure statutory and procedural deadlines are met; leverage working knowledge of IP docketing systems.
- Draft client-facing correspondence, including reporting letters, fee reminders, and status updates.
- Coordinate with foreign associates on international filings and formalities.
- Manage document localization/legalization requirements for foreign applications and litigation support.
Knowledge, Skills and Abilities Required
- Demonstrated ability to manage high-volume deadlines with strong attention to detail
- Working knowledge of USPTO filing and status systems; familiarity with ETAS and WIPO/Madrid processes preferred
- Strong written communication skills for client reporting and coordination with foreign counsel
- Proficiency with Microsoft Office and document management tools; experience with IP docketing software preferred
- Experience with CPI is a plus
- Familiarity with procedures for billable and tracking time
Education and Experience
- Minimum of 3 years' experience in international and domestic trademark and/or patent prosecution
- Minimum of 1+ years' experience with copyright prosecution and recordation is a plus
- Bachelor's or Associate's degree a plus
- Paralegal certificate from an ABA approved paralegal program is a plus, but not required
Pay
The expected pay scale for this position is $33.33–$38.46 per hour (overtime eligible per applicable laws) with an approximate annualized equivalent of $64,993.50–$75,000.00 based on 37.50 hrs./week. Actual earnings may vary. The actual compensation offered will depend on factors such as your qualifications, relevant experience, education, work location, and market conditions.
Benefits
- Medical, dental, vision, and FSA
- Life and disability coverage
- Paid maternity & parental leave
- Family building resources
- Identity theft protection
- 401(k) plan
- Paid sick, personal and vacation time
- Professional growth opportunities
- Work-life balance programs
- Programs that recognize and celebrate your contributions